International Trademark Filing

Like India, every other country has trademark laws governing its territory. When an applicant wants to secure the trademark on an international platform, they have two ways to attain it. Either they have to file individual applications in each country where they want to secure their mark/s or they have to apply to the Madrid System by way of a single application. Let us understand how! 

WIPO and Madrid Protocol

The Trademark registration under the Madrid Protocol is governed by the World Intellectual Property Organization (WIPO).

Under the Madrid protocol, an applicant can protect a mark in different territorial jurisdictions at the same time by applying through a centralized system. The filed application is further presented to the International Bureau of WIPO and published in the WIPO Gazette of International Marks journal. The WIPO organization notifies each contracting state in the regional or national offices about the newly filed application. Each contracting state or registered applicant possesses the right to refuse the application to proceed further. 

VALIDITY: The validity of such an International Trademark Registration is for a period of Ten years. Once its validity is over, the application can be renewed by filling out the prescribed application along with the required fees. However, if the international registration has not been used within 5 years from the date of registration, it may cease.

BENEFITS, to go for International Trademark Filing:

• Protection around the World
• Boost in Brand Value
• Maintaining consistency for Brand
• Creates trustworthiness among the customers
• Achievement of distinguishing reputation on a global level
• Prevents others from using similar marks worldwide 
• Ease in expanding business in the market
• Reduction in administrative costs by filing a single application for multiple countries

THREE BASIC STEPS, involved in the Madrid system for international filing of trademarks:

• Filing and its assessment by the Office of origin: Filing an International Trademark Application will be checked by the Office of the origin country to ensure it corresponds to the details of the basic trademark before further sending the application to WIPO.

• Scrutiny by WIPO: WIPO after receiving the application checks if the trademark complies with all the formal requirements such as payment, contact details, quality of images, etc. However, if it does not meet the requirements then a notice of irregularity will be sent to the applicant. Compliance of such notice by the applicant will lead the application to be registered with the WIPO’s gazette and a certificate of registration will be sent.

• Examination by Office: The IP offices of each Madrid Member will then conduct a thorough substantial examination. Thereafter each will either accept or refuse the trademark, the details of which will be notified to the WIPO. Further, the WIPO notifies the same to the applicant. The duration of such an examination either takes 12 months or in some cases 18 months as well.

ELIGIBILITY

For an applicant to file an application under the Madrid protocol in the respective nation, the following criteria is to be fulfilled:

• The applicant should be -

• a citizen of that nation, or
• a domicile of that nation; or
• should have a commercial establishment or a real and effective business in that nation

In any of the 122 contracting parties under the Madrid Protocol, the applicant –  

• Should file a national application or have a registered mark in the home country.

However, the applicant has to attain a basic mark before filing the international application, under the Madrid system.

The Madrid system provides an option to track the application after filing the Form (MM2). The applicant has to select the “real-time search” in the Madrid Monitor portal.

REAL-TIME SEARCH: Helps in instantly accessing and searching the latest updates of the International Trademark applications and registrations that are filed through the portal of Madrid System. 

FEES: The required fees differ at each stage. 

• There is a fixed fee at the time of filing for the international trademark application. 
• Then the applicant is required to pay a supplementary fee to each designating party/country for such registration. 
• Later when the validity of the trademark registration is over, a renewal fee is charged. 
• Other than the aforementioned fees, if the applicant desires ownership changes, whether entirely or partially, a required fee is to be paid.

CONCLUSION

International Trademark Filing which is governed by the Madrid Protocol provides the applicant a platform wherein they simply have to file a single application to acquire trademark protection in multiple countries. 

This filing system has greatly simplified the process and removed the unnecessary efforts of the applicant for filing an application separately in each country where he so desires to acquire protection to his brand/trademark.